Kait Robinson v. Nanci Nette, Name Management Group / Domains by Proxy, LLC
Case No. D2015-1562
1. The Parties
The Complainant is Kait Robinson of the United States of America, represented by Frank Weinberg Black, P.L., United States of America.
The Respondent is Nanci Nette, Name Management Group of Los Angeles, California, United States of America / Domains by Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2015. On September 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 10, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2015.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on October 14, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The date of the Domain Name registration was confirmed by the Registrar to be April 10, 2010.
The Panel conducted a limited search on the United States Patent and Trademark Office website to confirm that the name “Kait Robinson” does not appear to be registered as a trademark in the United States.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and redirects to “ww2.kaitrobinson.com”, which appears to be a “parking page” with links to advertisements.
Because there is no response, any facts regarding the use and fame of the mark are taken from the Complaint and are generally accepted as true in the circumstances of this case, although the weight provided to these facts and allegations is discussed below.
5. Parties’ Contentions
The Complainant alleges that Kait Robinson is a famous American fashion photographer and that she has been featured in numerous publications and advertising campaigns.
The Complainant further alleges that she has used the mark “Kait Robinson” for at least five years.
The Complainant also claims that from at least as early as 2010 to the present, the Complainant has continuously used her name and trademark “Kait Robinson” in connection with the advertising, promotion, and offering of fashion photography.
The Complainant further claims that she uses “Kait Robinson” on a variety of advertising materials and that through the Complainant’s extensive advertising, “Kait Robinson” has garnered significant recognition by consumers with regard to fashion photography. The Complainant asserts, “as a result of Complainant’s substantial and continuous use of the trademarks for almost five years in connection with fashion photography, ‘Kait Robinson’ has become a distinctive identifier that, in the minds of consumers, associates the Complainant with the services she provides. Accordingly, Complainant has established significant trademark rights in and to ‘Kait Robinson’”.
In addition, the Complainant alleges that she utilized for several years until earlier in 2015 and that earlier this year, while the Complainant was on location for a fashion photography shoot, the Domain Name expired. The Complainant alleges, “upon information and belief, Respondent had backordered the kaitrobinson.com URL and acquired it earlier this year. Immediately upon her return, Complainant attempted to renew the registration for kaitrobinson.com to find it now registered by Respondent.” The Complainant also alleges that the website is intended to misdirect business and constitutes tarnishment of Complainant’s trademark.
To summarize the Complaint, the Domain Name is confusingly similar to the Complainant’s personal name and mark. The presence of the Top-Level Domain suffix “.com” and the absence of spaces in the Domain Name does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s name and mark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g., by failing to file a response), as the Panel considers appropriate.
A. Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
The Panel finds that the Complainant has failed to satisfy the first element of the UDRP. The evidence in the record is inadequate to establish the Complainant’s common law trademark rights in her personal name. The Panel is not persuaded by the evidence provided of the Complainant’s claim that she is a famous photographer or that she has established common law rights in her name.
The Complainant’s evidence for common law rights in her personal name amounts to three interviews and profiles in online magazines and blogs. In the Panel’s view, these articles, on their own, do not establish the Complainant’s rights in a trademark or service mark, as required to satisfy paragraph 4(a)(i) of the Policy. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition notes at paragraph 1.6, the consensus view of WIPO panels is that:
“While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for a trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person’s name as a distinctive identifier of goods or services offered under that name would normally be required…A trademark-equivalent basis has been found in the common law action of passing off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.… However: the name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purposes of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.”
In this case, there is not sufficient evidence that the Complainant is a famous photographer, let alone sufficient evidence that her name has acquired a secondary meaning so as to function as an identifier of any particular goods or services. Accordingly, the Panel finds that there is insufficient evidence that the Complainant holds common law trademark or service mark rights in her personal name.
In summary, this Panel finds there is nothing in the available record that establishes that the Complainant’s personal name has become distinctive of any particular goods or services or that the Complainant holds any relevant trademark or service mark right in “Kait Robinson” for purposes of the Policy.
The Panel finds that the Complainant failed to satisfy paragraph 4(a)(i) of the Policy. The Complaint accordingly fails.
As the Complaint fails on the first Policy element, the Panel need not address the second and third Policy elements. As such, the Panel makes no finding regarding the Respondent’s rights or legitimate interests in the Domain Name (about which the Panel is highly doubtful). The Panel also makes no finding regarding whether the Domain Name was registered and is being used in bad faith (which, given the Complainant’s unrebutted contentions described in Section 5.A. above, the Panel suspects might well be the case).
For the foregoing reasons, the Complaint is denied.
Ellen B. Shankman, Adv.
Date: October 28, 2015